Now both UPC appellate panels agree on jurisdiction over pre-UPC-start damages

Context: Earlier this year, the Unified Patent Court’s (UPC) Court of Appeal (CoA) held in Fives v. REEL that the UPC has jurisdiction over infringement claims relating to the period before the UC opened its doors (i.e., damages from periods prior to June 1, 2023) (January 17, 2025 ip fray article). The related headnote said: “The Court has jurisdiction to decide on acts of infringement committed before the entry into force of the UPCA on 1 June 2023, as long as the European patent invoked has not yet lapsed at that date.” This holding was made by the CoA’s second panel.
 
What’s new: Today, the Coa’s first panel has reached the same conclusion in a different case, ESKO v. XSYS (PDF). That decision also addresses damages claims relating to the period between an opt-out of a patent from the UPC system and the withdrawal of that opt-out. There, too, the UPC has jurisdiction. The first panel affirmed a decision (denial of preliminary objection) by the Munich Local Division (LD).
 
Direct impact: The proceedings will continue in the Court of First Instance (CFI), and at the end of the proceedings, a cost decision will come down as well.
 
Wider ramifications: Now that both panels of the UPC’s CoA have resolved this question, it is settled law and appears highly unlikely that the CoA would at some point change mind.
 
There isn’t a lot to write about it, but given the importance of this matter to UPC practitioners we decided to dedicate a web article to it, after initially sharing the upshot of the appellate ruling on LinkedIn.
 
The preliminary objection (PO) at issue was admissible because even a temporary loss of jurisdiction can be the subject of a PO. But it was not sustained.
 
The defendants raised a “ratione temporis” (“for temporal reasons”) argument under the Vienna Convention on the Law of Treaties (VCLT), but the first panel resoundingly rejected that argument. The decision says that the UPC Agreement (UPCA) does not come with any limitation of the period for which the UPC has jurisdiction. It would run counter to the idea of a common patent court for the contracting member states to impose such limitations. There is no conflict with the concept of the non-retroactivity of international treaties:
 
36. At the time of deciding on the competence of the Court, the Court has applied the relevant applicable provisions on the competence of the Court, namely Art. 32 UPCA, applicable at that date, which does not raise a question of retroactivity.
 
37. Even if retroactivity were assumed in favour of XSYS with regard to those infringements that occurred prior to the date of entry into force of the UPCA, it would not be incompatible with Art. 28 VCLT since it appears from the Agreement that the Court shall have competence on infringement also in respect of acts having occured prior to the entry into force of the Agreement, as indicated above.
 
The fact that patentees can, during the transitional period, choose between asserting a patent in a national court of a contracting member state or the UPC does not limit the competence of the court in which the patentee elected to sue.
 
The window between an opt-out and its withdrawal is not exempt either.
 
Also, the CoA declined to refer any related question to the European Court of Justice (ECJ) given that even the most favorable interpretation of the VCLT does not lead to a different outcome.